To: | Cajun Funding Corp. (ColsTrademarks@fbtlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88383366 - CHURCH'S TEXAS CHICKEN - 0717871 |
Sent: | May 26, 2020 11:40:56 AM |
Sent As: | ecom109@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88383366
Mark: CHURCH'S TEXAS CHICKEN
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Correspondence Address: |
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Applicant: Cajun Funding Corp.
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Reference/Docket No. 0717871
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: May 26, 2020
INTRODUCTION – STATEMENT OF USE
Summary of Issues:
* Mark Differs on Specimen & Drawing – Not Material - SOU
MARK DIFFERS DRAWING & SPECIMEN – SOU – NOT MATERIAL
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class(es) 29, which is required in the statement of use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(b); TMEP §807.12(a).
In this case, the drawing displays the mark with a dark circular background (and the mark description references a “dark circle”). However, the specimen displays the mark without the dark circular background. The mark on the specimen does not match the mark in the drawing because the dark circle that appears in the drawing is missing from the mark in the specimen. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a new drawing of the mark that shows the mark on the specimen and, if appropriate, an amendment of the description and/or color claim that agrees with the new drawing. See 37 C.F.R. §2.72(b). The following amended description is suggested, if accurate: “The mark consists of a circle around the words “CHURCH’S TEXAS CHICKEN” with a star above the words.” Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72(b); TMEP §807.14.
(2) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the statement of use, and (b) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use.
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
Applicant, however, may not respond by withdrawing the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
How to respond. Click to file a response to this nonfinal Office action.
/Deborah Lobo/
Trademark Examining Attorney
Law Office 109
571-272-3263
deborah.lobo@uspto.gov
RESPONSE GUIDANCE